Post-Expiration Patent Injunctions !
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Message: Post-Expiration Patent Injunctions !
Both Kearns I and Johns Hopkins University present a substantial roadblock to
anyone attempting to obtain a post-expiration injunction. Although neither case
specifically holds that such injunctions are illegitimate, the Federal Circuit in both
cases narrowed the legal foundation on which a post-expiration injunction can stand.
The court’s analysis in Kearns I, and the court’s further analysis in Kearns II, limits
the instances in which an injunction after a patent’s expiration does not extend the
patent period. An injunction may not extend the patent’s lifetime if (1) the injunction
only destroys data obtained through an infringing activity occurring during the patent
period, returning the parties to the status quo, and (2) the patentee is selling the
patented product so that it is harmed by the infringer’s head start.
The Federal Circuit further limits the scope of a post-expiration injunction by
preventing a patentee from relying on Section 283.151 Section 283 cannot be used to
remedy the harms of past infringement, which are the only harms which can occur
under an expired patent. Thus, a court can either fashion an injunction under its
general equitable powers or issue damages to remedy the head start, such as seen in
the accelerated reentry damage cases.On the other hand, the district court and pre-Federal Circuit cases cited above demonstrate that the issuance of an injunction after a patent expires does occur.Arguing for a post-expiration injunction or for accelerated reentry damages would add another remedy to a patent holder’s arsenal when litigating an expired patent and mayaid in settlement negotiations. A post-expiration injunction provides an additional wayto insure that the relief to a patent holder is adequate. “The consequences [of a post expiration injunction] may be serious, but if [the infringers] had wished to avoid them
they ought to have refrained from such manufactur[ing]” of infringing articles.
anyone attempting to obtain a post-expiration injunction. Although neither case
specifically holds that such injunctions are illegitimate, the Federal Circuit in both
cases narrowed the legal foundation on which a post-expiration injunction can stand.
The court’s analysis in Kearns I, and the court’s further analysis in Kearns II, limits
the instances in which an injunction after a patent’s expiration does not extend the
patent period. An injunction may not extend the patent’s lifetime if (1) the injunction
only destroys data obtained through an infringing activity occurring during the patent
period, returning the parties to the status quo, and (2) the patentee is selling the
patented product so that it is harmed by the infringer’s head start.
The Federal Circuit further limits the scope of a post-expiration injunction by
preventing a patentee from relying on Section 283.151 Section 283 cannot be used to
remedy the harms of past infringement, which are the only harms which can occur
under an expired patent. Thus, a court can either fashion an injunction under its
general equitable powers or issue damages to remedy the head start, such as seen in
the accelerated reentry damage cases.On the other hand, the district court and pre-Federal Circuit cases cited above demonstrate that the issuance of an injunction after a patent expires does occur.Arguing for a post-expiration injunction or for accelerated reentry damages would add another remedy to a patent holder’s arsenal when litigating an expired patent and mayaid in settlement negotiations. A post-expiration injunction provides an additional wayto insure that the relief to a patent holder is adequate. “The consequences [of a post expiration injunction] may be serious, but if [the infringers] had wished to avoid them
they ought to have refrained from such manufactur[ing]” of infringing articles.
Texas intellectual property law journal
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